Cracking Down on IP Scammers.

Trademark and patent holders are frequently targeted by scams, often in the form of official-looking correspondence. Some companies promise to protect your patent in foreign countries, while others claims that you have an unpaid invoice for trademark registration services.  I have made many blog posts warning of these “notifications.”

While the services offered may sometimes be legitimate, the mailings are misleading because they use language, formatting and other identifying features that suggest the sender is an official government agency.  I frequently field calls from concerned clients who have received unsolicited offers for patent, copyright and trademark services.

The U.S. Patent and Trademark Office and other industry groups frequently issue warnings about these fraudulent solicitations; however, new scams seem to pop up every few months. To put these companies out of business for good, a New York intellectual property law firm is pursuing legal action in federal court.

The suit against Patent & Trademark Agency LLC and its principal owner, Armens Organesjans, alleges that the company seeks to confuse trademark owners into purchasing services under the false color of authority. The claims include unfair competition, false advertising and tortious interference with prospective economic relations.

As highlighted in the complaint, Patent & Trademark Agency LLC’s website includes a statement that they are not lawyers and do not provide legal advice; however, its Terms, Conditions and Use Agreement state the opposite: “By accepting these terms you specifically and irrevocably authorize [Patent & Trademark Agency] to conduct negotiations and act on your behalf with any party needed in order to renew or register your trademark.”

The complaint further alleges that the company falsely states that “the Patent & Trademark Agency is the nation’s premier trademark registration and renewal service.” In reality, the USPTO lists the company among entities that have been the subject of complaints regarding fraudulent solicitations.

Last year, the same New York IP firm sued USA Trademark Enterprises Inc. on similar grounds. As a result of the lawsuit, the company was permanently barred from engaging in intellectual property-related activities in the United States.

The Attorney General of Vermont also sued Patent & Trademark Agency LLC to protect its citizens from these scams.

If you believe that you have been a target of this type of scam, please report it to the AG of your state and to your IP attorney.  You can also file a complaint against the scammer on the USPTO web site here.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Apple Wins Another “i” Lawsuit.

Apple Inc. seems to have the market corned when it comes to trademarks that begin with “i.” The company recently prevailed in a trademark infringement lawsuit over the use of the “iBooks” trademark.


A small New York publishing house, Black Tower Press, filed the lawsuit after Apple announced its new online bookstore. Black Tower alleged that Apple’s use of the term in connection with its e-reader platform violated the publisher’s “iBooks” logo, which was acquired from another publishing house.


U.S. District Court Judge Denise Cote disagreed. She first noted that neither Black Tower nor its predecessor registered the trademark. Meanwhile, Apple has held a trademark registration for the term since 1999, when it was used in connection with laptop computers. It obtained further trademark protection to use the term for its e-reader platform in 2010.
Cote further disagreed that Apple’s use of the “iBooks” trademark would lead to customer confusion. “They have offered no evidence that consumers who use Apple’s iBooks software to download ebooks have come to believe that Apple has also entered the publishing business and is the publisher of all of the downloaded books, despite the fact that each book bears the imprint of its actual publisher,” Cote wrote.
Source: Gigaom.com

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

A Modern Trademark System For The EU.

The European Union (EU) continues to announce ambitious initiatives to modernize its intellectual property laws. The latest proposal seeks to overhaul how the EU protects trademarks.

In Europe, trademarks can be registered at national level or at EU level as a Community trademark (CTM). The two types of trademarks coexist, and the same mark may be registered as a Community and/or as a national trademark.

The latest proposals seek to modernize and streamline both systems. As highlighted by the European Commission, there are several reasons for change. For instance, no significant changes have been made since national trademark registration in the EU Member States was harmonized 20 years ago and the unitary Community trademark was created more than 15 years ago. Since then, the business environment has changed significantly. In addition, many formal requirements and procedures remain non-harmonized.

As further detailed by the European Commission, the proposals do not seek to create a new system but perform a well-targeted modernization of existing provisions, with the following aims:

  • Streamlining and harmonizing registration procedures, by introducing principal procedural rules into the Directive and taking the Union (CTM) system as a benchmark
  • Modernizing the existing provisions and increasing legal certainty, by amending outdated provisions, removing ambiguities, clarifying trade mark rights in terms of their scope and limitations and incorporating extensive case law of the Court of Justice
  • Facilitating cooperation between the Member States’ offices and the EU Agency, by putting in place a legal framework for this cooperation
  • Improving the means to fight against counterfeit goods, in particular when they are in transit through the Union territory
  • Adapting the texts to the terminology and procedures of the Lisbon Treaty (e.g. renaming the Community trade mark which will be called the European trade mark in the future) and to the inter-institutional Common Approach on decentralized agencies of July 2012 (e.g. new rules on governance of the EU agency)
  • Making the fee structures more flexible to better meet the needs of users and adapting (reducing) accordingly the fees payable to the EU Agency.

How Can I Help?

The proposals are largely good news for businesses seeking to protect their trademarks in the EU. If approved, they will not only lead to greater legal certainty but also reduced application and renewal fees. For assistance pursuing a trademark application overseas, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Disney Withdraws Trademark Registration After Backlash

Walt Disney Company’s attempt to register a trademark for the phrase “Día de los Muertos,” or “Day of the Dead,” highlights that public feedback can sometimes trump intellectual property concerns.  After facing public backlash, the company withdrew the trademark application.

Disney initially sought to register the phrase in connection with a Pixar film currently called “The Untitled Pixar Movie About Dia de los Muertos.” According to the application, it planned  to use the phrase on themed merchandise, including toys and clothing.

Día de los Muertos is traditionally celebrated in Mexico and across Latin America. The focus of the holiday, which takes place November 1 and 2, is to celebrate the lives of deceased loved ones by building altars, holding processions, visiting cemeteries, and leaving offerings.

In addition to questions over whether Disney could legally register a trademark for a holiday, the application drew criticism from the Latino community. As CNN reports, tweets included “Tell @Disney not to trademark Day of the Dead. Culture is NOT for sale!” from Presente.org, a national organization that “exists to amplify the political voice of Latino communities.”

A petition on Change.org collected over 21,000 signatures. “Our spiritual traditions are for everyone, not for companies like Walt Disney to trademark and exploit,” wrote Grace Sesma, the petition’s creator. “I am deeply offended and dismayed that a family-oriented company like Walt Disney would seek to own the rights to something that is the rightful heritage of the people of Mexico.”

Disney recently announced that it has withdrawn its application. The company did not specifically indicate whether the decision was directly influenced by the response of social media. Rather, it simply stated that trademark protection was no longer needed because the title of the film was changed.

As this situation highlights, companies seeking to protect their brands through trademark registration must address a number of considerations. While IP protection is certainly a top concern, it not always the only one.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

New ITC Report Highlights IP Infringement Trends

The U.S. International Trade Commissions (ITC) report on cases involving allegations of unfair methods of competition and unfair acts involving imported articles under Section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. § 1337. Because most Section 337 investigations involve allegations of infringement of intellectual property rights, the report offers some interesting insights.

The ITC first notes that Section 337 investigations have increased significantly over the past five years and are expected to remain at elevated levels. In response, the agency has opened a new courtroom that is specially equipped to handle the complex cases that account for much of the IP-based Section 337 docket.

The report also highlights that a substantial number of Section 337 investigations involve IP-based matters regarding high tech products. For instance, computer and telecommunications products accounted for about 25 percent of new investigations instituted in calendar year 2011 and about 30 percent of new investigations in 2012. Other consumer electronic products accounted for about 15 percent of new investigations in 2011 and about 20 percent of new investigations in 2012

The ITC report also addresses investigations initiated by non-practicing entities (NPEs). It cites that some commentators have suggested that NPE filings account for the agency’s increased caseload because of the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, LLC, which made injunctions more difficult to obtain in district courts. However, the ITC data does not seem to support this suggestion.

According to the ITC, since the eBay decision on May 15, 2006, it instituted 301 investigations through the first quarter of 2013. Of these, Category 1 NPEs, defined as entities that do not manufacture products that practice the asserted patents and whose business model primarily focuses on purchasing and asserting patents, accounted for 33 (or 11 percent). Category 2 NPEs, defined as all other entities that do not manufacture products that practice the asserted patents, accounted for 27 (or 9 percent).

In that same time period, only four NPEs were successful in obtaining exclusion orders: two Category 1 NPEs and two Category 2 NPEs. In each of these four investigations, the involved NPE or its subsidiary developed the technology at issue in the investigation.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Study Confirms Trademark Lawyers Matter.

A recent study confirms that having a trademark lawyer by your side during the application process makes a difference. Researchers from the University of North Carolina Law School found that trademark applications filed with assistance of an attorney have a 22 percent higher success rate.

The researchers compared applications filed by trademark lawyers to those filed without the assistance of counsel from 1984 to 2010. They found that applicants with counsel were approved 82 percent of the time; meanwhile, pro se applicants, like those that file by services such as Legal Zoom, only received approval 60 percent of the time.

The study also revealed that the experience of the applicant also makes a difference. Experience was measured by the number of applications filed, with the least experienced category including those with 10 or fewer applications and the most experienced group including those with 30 or more applications.

Pro se applicants with the least experience had the lowest level of success, only achieving publication 57 percent of the time. Overall, 88 percent of applicants represented by counsel had lawyers from the highest experience category.

As Reuters reports, the researchers acknowledge that their findings may be slightly skewed. Of the pro se applications examined, American Greetings Corp, Xerox Corp, Hershey Chocolate & Confectionary Corp and McDonald’s Corp. were among the most successful. However, these companies likely relied on in-house counsel.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman